Nuttall v. Juarez

• Decision Date: 26 November 2013
• Docket Number: No. 3:12–cv–2123–M–BF.,3:12–cv–2123–M–BF.
• Citation: 984 F.Supp.2d 637
• Parties: Michael NUTTALL f/k/a Michael Floreale d/b/a When in Rome and Musicwerks, Plaintiff, v. Bobby Gene JUAREZ a/k/a Rob Juarez d/b/a Boss Booking Agency, When in Rome, and When in Rome UK, Clive Farrington, individually and d/b/a When in Rome UK, and Andrew Mann, individually and d/b/a When in Rome UK, Defendants.
• Court: U.S. District Court — Northern District of Texas

984 F.Supp.2d 637

Michael NUTTALL f/k/a Michael Floreale d/b/a When in Rome and Musicwerks, Plaintiff,

v.Bobby Gene JUAREZ a/k/a Rob Juarez d/b/a Boss Booking Agency, When in Rome, and When in Rome UK, Clive Farrington, individually and d/b/a When in Rome UK, and Andrew Mann, individually and d/b/a When in Rome UK, Defendants.

No. 3:12–cv–2123–M–BF.

United States District Court,

N.D. Texas,

Dallas Division.

Nov. 26, 2013.

Wendy B. Mills, The Law Office of Wendy B. Mills, Dallas, TX, for Plaintiff.

Elizann Carroll, Molly B. Richard, Richard Law Group Inc., Dallas, TX, for Defendants.

ORDER ACCEPTING FINDINGS, CONCLUSIONS, AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE

BARBARA M.G. LYNN, District Judge.

After making an independent review of the pleadings, files, and records in this case, and the Findings, Conclusions, and Recommendation of the United States Magistrate Judge dated November 8, 2013, the Court finds that the Findings, Conclusions, and Recommendation of the Magistrate Judge are correct, and they are acceptedas the Findings, Conclusions, and Recommendation of the Court.

IT IS, THEREFORE, ORDERED that the Findings, Conclusions, and Recommendation of the United States Magistrate Judge are accepted. Defendants' motions to dismiss Plaintiffs claims under Fed.R.Civ.P. 12(b)(2) and 12(b)(3) (Docs. 20, 39 & 40) are GRANTED on grounds that venue is improper in the Northern District of Texas. In the interest of justice, this case will be transferred to the Central District of California, Western Division in Los Angeles.

The clerk of court shall effect the transfer of this action in accordance with the usual procedure.

FINDINGS, CONCLUSIONS, AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE

PAUL D. STICKNEY, United States Magistrate Judge.

In this civil action arising out of two competing bands' claims to use the name “When In Rome,” Defendants have filed three separate motions to dismiss for lack of personal jurisdiction and improper venue. For the following reasons, the Court determines that venue is improper in the Northern District of Texas and recommends that the District Court transfer this case, in the interest of justice, to the Central District of California.

I. Background

Plaintiff Michael Nuttall, formerly known as Michael Floreale, and Defendants Clive Farrington and Andrew Mann are the original members of “When in Rome,” the British musical band that wrote and performed the 1988 hit song called “The Promise.” See Farrington Decl. (Doc. 20–1) at 1, ¶ 1 & 2, ¶ 8; Mann Decl. (Doc. 39–1) at 1, ¶ 3.¹ Despite their early success, the original members of When In Rome stopped working together in the early 1990s, and Plaintiff moved to the United States. See Farrington Decl. at 2, ¶ 9; Plf. Second Am. Compl. at 7, ¶ 9. Plaintiff is now a Texas resident, and Farrington and Mann are residents of the United Kingdom. Plf. Second Am. Compl. at 1, ¶ 1; Farrington Decl. at 1, ¶ 1; Mann Decl. at 1, ¶ 2.

Plaintiff continued to work as a musician and composer after he moved to the United States. Plf. Sec. Am. Compl. at 7, ¶ 9. Sometime in 2006, he assembled a band and resumed performing live shows using the name When in Rome. Plf. Second Am. Compl. at 8, ¶ 10. Defendant Bobby Gene Juarez, a California resident, joined Plaintiff's band as the drummer and percussionist, and Juarez's company, The Boss Booking Agency, served as the band's booking agent. See Juarez Decl. (Doc. 40–1) at 1, ¶¶ 2–3. Between 2007 and 2010, Plaintiff's band performed throughout the United States, including at least seven concerts in Texas and 37 concerts in California. Juarez Decl. at 6, ¶ 12. On or about January 4, 2011, Plaintiff obtained a federally registered trademark for “WHEN IN ROME” for entertainment services in the nature of live musical performances. See Plf. First Am. Compl. (Doc. 8), Exh. F.

The relationship between Plaintiff and Juarez soured, and Juarez left Plaintiff's band in late 2010 or early 2011. Plf. Second Am. Compl. at 12, ¶ 14; Juarez Decl. at 4, ¶ 12. Almost immediately thereafter, Juarez partnered with Farrington and Mann, and the three Defendants went on tour performing concerts using the name, “When in Rome UK.” Juarez Decl. at 1, ¶ 3 & 2, ¶¶ 6, 8; Farrington Decl. at 2, ¶ 10; Mann Decl. at 2, ¶ 6. In 2011 and 2012, Defendants' band toured the United States and played at least fourteen concerts in California and one in Houston, Texas. Juarez Decl. at 6, ¶ 10. Defendants created the website www. wheninrome official. com to promote their band. See Plf. Second Am. Compl. at 12, ¶ 15. At least one customer in Houston, Texas used Defendants' website to purchase a When In Rome CD. Juarez Decl. at 6, ¶ 11. Defendants also allegedly sold When In Rome CDs at a Redondo Beach, California concert with jacket covers that failed to list Plaintiff as a musical author in disregard of his copyright. Plf. Second Am. Compl. at 16, ¶ 22.

In or around March 2011, Plaintiff demanded that Defendants cease and desist from using the name When In Rome UK because it was confusingly similar to Plaintiff's trademark. Defendants allegedly agreed to stop using the challenged name and perform as “Clive Farrington and Andrew Mann formerly of When In Rome,” but then breached their agreement by continuing to promote their band as When In Rome UK. Plf. Second Am. Compl. at 12–13, ¶¶ 16–17 & 16, ¶ 22. Plaintiff contends that Defendants performed a concert as When In Rome UK at Stereo Live in Houston, Texas on August 25, 2011. Plf. Second Am. Compl. at 13, ¶ 17. Defendants admit that they performed at Stereo Live as part of the “Lost '80s Live” tour that Juarez arranged, but insist that they actually performed using the name “Clive Farrington and Andrew Mann formerly of When in Rome,” as Plaintiff requested. Juarez Decl. at 4, ¶ 5; Mann Decl. at 1–2, ¶ 5. Plaintiff further contends that, in response to his cease and desist demand, Defendants made false statements to industry trade publications, concert promoters, and venues, including Stereo Live in Houston, implying that Plaintiff obtained his trademark illegally. Plf. Second Am. Compl. at 10, ¶ 14 & 14, ¶ 19. Defendants allegedly posted similar untrue statements on Facebook and other social media websites to harass and intimidate Plaintiff. Id. at 14, ¶ 19 & 17, ¶ 23.

On June 26, 2012, Plaintiff sued Defendants in Texas state court alleging, among other things, claims for trademark infringement, unfair competition, and dilution under the Lanham Act, 15 U.S.C. § 1114 et seq. Defendants timely removed to federal court on grounds that the case presents a federal question. See Rem. Not. (Doc. 1) at 4; 28 U.S.C. § 1331. In his most recent pleading,² Plaintiff asserts the following causes of action against Juarez, Farrington, and Mann: (1) federal trademark infringement under Section 32 of the Lanham Act; (2) unfair competition under Section 43 of the Lanham Act; (3) violations of the Anti–Cybersquatting Consumer Protection Act; (4) unfair competition and misappropriation under Texas law; (5) injury to business reputation and trademark dilution under Texas law; (6) libel, slander, and defamation; (7) copyright infringement; (8) breach of royalty agreement; (9) breach of agreement to cease and desist; (10) false representation in commerce; (11) tortious interference with contracts and/or business opportunities; and (12) unjust enrichment. Plf. Second Am. Compl. at 18–30, ¶¶ 25–92. Plaintiff seeks monetary damages, injunctive relief, and transfer of the registration of the domain name for Defendants' website, www. wheninrome official. com. Id. at 31–34. He also seeks a declaratory judgment that he owns the When In Rome mark and has superior rights to use the mark and words or phrases that are confusingly similar, including When In Rome UK. Id. at 29–30, ¶¶ 86–90.

Defendants deny Plaintiff's allegations and further argue that personal jurisdiction is lacking and venue is improper in the Northern District of Texas. Defendants filed separate motions seeking to dismiss Plaintiffs claims under Fed.R.Civ.P. 12(b)(2) and 12(b)(3). Juarez also seeks, in the alternative, to have the case transferred to the Central District of California. As grounds for their motions, Defendants generally contend that they have insufficient contacts with the state of Texas and the exercise of personal jurisdiction over them would offend traditional notions of fair play and substantial justice. They further contend that a substantial part of the events giving rise to Plaintiff's claims did not occur in the Northern District of Texas. The District Court permitted the parties to conduct jurisdictional discovery. See Order dated 1/10/13 (Doc. 32) at 2. That discovery is now complete, and the jurisdictional and venue issues have been fully briefed. Defendants' motions to dismiss are ripe for determination.

II. Legal Standards

The Court first considers Defendants' arguments that this case should be dismissed pursuant to Fed.R.Civ.P. 12(b)(3) because venue is improper in the Northern District of Texas. A court typically decides personal jurisdiction questions before considering any venue challenges. “[W]hen there is a sound prudential justification for doing so,” however, a court may reverse the normal order. Leroy v. Great W. United Corp., 443 U.S. 173, 180, 99 S.Ct. 2710, 61 L.Ed.2d 464 (1979) (explaining that “neither personal jurisdiction nor venue is fundamentally preliminary”). In this case, resolution of the venue issue renders the personal jurisdiction problem moot and avoids the need to address constitutional questions. It is thus appropriate to consider venue as an initial matter. See, e.g., Corbello v. Devito, No. 1:07–CV–985, 2008 WL 2097435, at *2 (E.D.Tex. May 19, 2008) (finding it appropriate to consider venue first because doing so obviated the need to resolve questions raised by personal jurisdiction challenge); Assetworks, Inc. v. City of Cincinnati, No. SA–02–CA–0351–FB, 2003 WL 25463096,...